Initial Report Excerpts - Section 1.8: Dispute Proceedings
Dear WG Members, Attached, please find the Initial Report excerpt for section 1.8 on Dispute Proceedings. This section consists of: Objections Accountability Mechanisms & Post-Delegation Dispute Resolution Procedures. This section has been added to the Wiki here: https://community.icann.org/x/NwUhB. We may be able to begin review of this section on the 12 June 2018 meeting, so please begin your review and feel free to provide your input on these sections ahead of their discussion during the WG meeting. Best, Steve Steven Chan Policy Director, GNSO Support ICANN 12025 Waterfront Drive, Suite 300 Los Angeles, CA 90094-2536 steve.chan@icann.org mobile: +1.310.339.4410 office tel: +1.310.301.5800 office fax: +1.310.823.8649 Find out more about the GNSO by taking our interactive courses and visiting the GNSO Newcomer pages. Follow @GNSO on Twitter: https://twitter.com/ICANN_GNSO Follow the GNSO on Facebook: https://www.facebook.com/icanngnso/ http://gnso.icann.org/en/
As we have been reviewing these sections there have been edits suggested by members of the PDP.
From what I can tell the versions on the wiki are the originals and have not been redlined or updated.
What is the process by which those edits will be reflected back to the group to ensure they were accurately and fully captured? Will there be a proposed final interim report compiled and circulated prior to finalization and release to the community? Thanks
On Jun 7, 2018, at 7:55 PM, Steve Chan <steve.chan@icann.org> wrote:
Dear WG Members,
Attached, please find the Initial Report excerpt for section 1.8 on Dispute Proceedings. This section consists of:
1. Objections 2. Accountability Mechanisms & Post-Delegation Dispute Resolution Procedures.
This section has been added to the Wiki here: https://community.icann.org/x/NwUhB.
We may be able to begin review of this section on the 12 June 2018 meeting, so please begin your review and feel free to provide your input on these sections ahead of their discussion during the WG meeting.
Best, Steve
Steven Chan
Policy Director, GNSO Support
ICANN 12025 Waterfront Drive, Suite 300 Los Angeles, CA 90094-2536
steve.chan@icann.org<mailto:steve.chan@icann.org> mobile: +1.310.339.4410 office tel: +1.310.301.5800 office fax: +1.310.823.8649
Find out more about the GNSO by taking our interactive courses<applewebdata://310CAD3E-E244-4690-A938-C2655DD44BDE/learn.icann.org/courses/gnso> and visiting the GNSO Newcomer pages<http://gnso.icann.org/sites/gnso.icann.org/files/gnso/presentations/policy-e...>.
Follow @GNSO on Twitter: https://twitter.com/ICANN_GNSO Follow the GNSO on Facebook: https://www.facebook.com/icanngnso/ http://gnso.icann.org/en/
<Section 1.8 Dispute Proceedings_7June2018.pdf> <Section 1.8 Dispute Proceedings_7June2018.docx> <smime.p7s> _______________________________________________ Gnso-newgtld-wg mailing list Gnso-newgtld-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg
Regarding the draft in 1.8 related to Legal Rights Objections, the use of the word “infringement” as the standard applicable to LROs on page 15 of the draft is incorrect. During the course of the discussion, comments were made in the calls and on the list to the effect that the standard for LRO is NOT infringement. The 2012 round standard for LRO could be referred to as an “unfair advantage” and/or “passing off” and/or “impairment of reputation” standard. It is not an infringement standard. See excerpt from WIPO website below: What criteria will a panel use to determine the outcome of a Legal Rights Objection?<http://www.wipo.int/amc/en/domains/lro/faq/#top> As provided for in section 3.5.2 of the ICANN Applicant Guidebook, the independent panel will determine whether the potential use of the applied-for gTLD by the applicant: (i) takes unfair advantage of the distinctive character or the reputation of the objector’s registered or unregistered trademark or service mark (“mark”) or IGO name or acronym, or (ii) unjustifiably impairs the distinctive character or the reputation of the objector’s mark or IGO name or acronym, or (iii) otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark or IGO name or acronym. The language on page 15 of 1.8 may be changed to read as follows: “The Work Track discussed the fact that in the 2012 round, the Legal Rights Objections was based on “unfair advantage and/or “passing off” analysis. Some Work Track members noted that infringement, which is typically demonstrated through use, is difficult to prove for an applied-for TLD still in the application stage. There was disagreement in the Work Track about whether the existing basis of the Legal Rights Objection remains appropriate for subsequent procedures. While some Work Track members considered the standard of unfair advantage, “passing off”, and/or likelihood of confusion appropriately high, other Work Track members thought that it was too difficult for trademark owners to prevail in Legal Rights Objection cases where the string had more than one meaning. The Work Track also considered a strawman redline edit of AGB section 3.2.2.2, which proposed changing the standard from “unfair advantage”. “likelihood of confusion”, and/or “passing off” to a standard of proving that the string was being “abused” (a policy based on bad faith).[1] Some Work Track members expressed concern that the proposal would significantly expand the scope of the Legal Rights Objection and would constitute too significant a shift from the intent of the original policy. Other Work Track members expressed concern that “bad faith” presents a more difficult standard of proof and would represent a substantial change in policy in relation to the Legal Rights Objection process. The Work Track continues to accept feedback on these issues and the suggested revision. Anne E. Aikman-Scalese Of Counsel 520.629.4428 office 520.879.4725 fax AAikman@lrrc.com<mailto:AAikman@lrrc.com> _____________________________ [cid:image002.png@01D401A7.764DE690] Lewis Roca Rothgerber Christie LLP One South Church Avenue, Suite 2000 Tucson, Arizona 85701-1611 lrrc.com<http://lrrc.com/> From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces@icann.org] On Behalf Of Steve Chan Sent: Thursday, June 07, 2018 4:55 PM To: gnso-newgtld-wg@icann.org Subject: [Gnso-newgtld-wg] Initial Report Excerpts - Section 1.8: Dispute Proceedings Dear WG Members, Attached, please find the Initial Report excerpt for section 1.8 on Dispute Proceedings. This section consists of: 1. Objections 2. Accountability Mechanisms & Post-Delegation Dispute Resolution Procedures. This section has been added to the Wiki here: https://community.icann.org/x/NwUhB. We may be able to begin review of this section on the 12 June 2018 meeting, so please begin your review and feel free to provide your input on these sections ahead of their discussion during the WG meeting. Best, Steve Steven Chan Policy Director, GNSO Support ICANN 12025 Waterfront Drive, Suite 300 Los Angeles, CA 90094-2536 steve.chan@icann.org<mailto:steve.chan@icann.org> mobile: +1.310.339.4410 office tel: +1.310.301.5800 office fax: +1.310.823.8649 Find out more about the GNSO by taking our interactive courses<applewebdata://310CAD3E-E244-4690-A938-C2655DD44BDE/learn.icann.org/courses/gnso> and visiting the GNSO Newcomer pages<http://gnso.icann.org/sites/gnso.icann.org/files/gnso/presentations/policy-e...>. Follow @GNSO on Twitter: https://twitter.com/ICANN_GNSO Follow the GNSO on Facebook: https://www.facebook.com/icanngnso/ http://gnso.icann.org/en/ ________________________________ [1]https://community.icann.org/download/attachments/63157176/7.2.5%20Legal%20Ri... ________________________________ This message and any attachments are intended only for the use of the individual or entity to which they are addressed. If the reader of this message or an attachment is not the intended recipient or the employee or agent responsible for delivering the message or attachment to the intended recipient you are hereby notified that any dissemination, distribution or copying of this message or any attachment is strictly prohibited. If you have received this communication in error, please notify us immediately by replying to the sender. The information transmitted in this message and any attachments may be privileged, is intended only for the personal and confidential use of the intended recipients, and is covered by the Electronic Communications Privacy Act, 18 U.S.C. §2510-2521.
Karen, Robin, et al. I took another look at the references to “dispute resolution provider” after the call on Monday. I think you guys are right that Objection panels are called “dispute resolution providers”. Nevertheless, if Jeff and I were both confused, it may mean others reading the Initial Report could also be a bit confused. I’ll leave it up to Jeff and Work Track 3 Leadership as to what you think is best. Further to my note sent on Monday on the LRO language (forwarded again below this email), I found another section of the draft dealing with the grounds for the LRO which needs to be modified as shown in the snip below: ON PAGE 10 [cid:image001.png@01D4033C.65AF85F0] I realize this may not be significant to some, but the fact is that in the trademark law, there is a HUGE difference between “infringement” and “likelihood of confusion”. The former relates to violations and carries monetary damages. The latter refers to prevailing law in most countries relative to the grant of registrations. In 2012, the LRO was based on reputation impairment and/or likelihood of confusion and/or “passing off” grounds as noted in the excerpt from the WIPO rules below. This is not an “infringement” standard. Secondly, in relation to GAC Advice, we say ○ Given the changes to the ICANN Bylaws with respect to the Board’s consideration of GAC Advice, is it still necessary to maintain the presumption that if the GAC provides advice against a string (or an application) that such string or application should not proceed? I am not sure which Bylaws changes are referenced. I know of two significant changes: a. Requirement for GAC Advice to be consensus advice – but I think that means only as the GAC defines consensus – Are we saying that GAC cannot endorse any one nation’s objection as “Consensus Advice”? I am asking because I think this was debated in the Accountability Work Stream 1 work and may not have been resolved. b. Requirement of 60% vote for the Board to override GAC Advice. Lastly, in relation to all the recommendations at the top of page 8 related to the GAC, I would suggest these be conformed to use the word “should” rather than the word “must”. (We are varying the use in this draft.) Thank you, Anne Anne E. Aikman-Scalese Of Counsel 520.629.4428 office 520.879.4725 fax AAikman@lrrc.com<mailto:AAikman@lrrc.com> _____________________________ [cid:image002.png@01D4033F.984F16D0] Lewis Roca Rothgerber Christie LLP One South Church Avenue, Suite 2000 Tucson, Arizona 85701-1611 lrrc.com<http://lrrc.com/> From: Aikman-Scalese, Anne Sent: Monday, June 11, 2018 5:13 PM To: 'Steve Chan'; gnso-newgtld-wg@icann.org Subject: RE: [Gnso-newgtld-wg] Initial Report Excerpts - Section 1.8: Dispute Proceedings Regarding the draft in 1.8 related to Legal Rights Objections, the use of the word “infringement” as the standard applicable to LROs on page 15 of the draft is incorrect. During the course of the discussion, comments were made in the calls and on the list to the effect that the standard for LRO is NOT infringement. The 2012 round standard for LRO could be referred to as an “unfair advantage” and/or “passing off” and/or “impairment of reputation” standard. It is not an infringement standard. See excerpt from WIPO website below: What criteria will a panel use to determine the outcome of a Legal Rights Objection?<http://www.wipo.int/amc/en/domains/lro/faq/#top> As provided for in section 3.5.2 of the ICANN Applicant Guidebook, the independent panel will determine whether the potential use of the applied-for gTLD by the applicant: (i) takes unfair advantage of the distinctive character or the reputation of the objector’s registered or unregistered trademark or service mark (“mark”) or IGO name or acronym, or (ii) unjustifiably impairs the distinctive character or the reputation of the objector’s mark or IGO name or acronym, or (iii) otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark or IGO name or acronym. The language on page 15 of 1.8 may be changed to read as follows: “The Work Track discussed the fact that in the 2012 round, the Legal Rights Objections was based on “unfair advantage and/or “passing off” analysis. Some Work Track members noted that infringement, which is typically demonstrated through use, is difficult to prove for an applied-for TLD still in the application stage. There was disagreement in the Work Track about whether the existing basis of the Legal Rights Objection remains appropriate for subsequent procedures. While some Work Track members considered the standard of unfair advantage, “passing off”, and/or likelihood of confusion appropriately high, other Work Track members thought that it was too difficult for trademark owners to prevail in Legal Rights Objection cases where the string had more than one meaning. The Work Track also considered a strawman redline edit of AGB section 3.2.2.2, which proposed changing the standard from “unfair advantage”. “likelihood of confusion”, and/or “passing off” to a standard of proving that the string was being “abused” (a policy based on bad faith).[1] Some Work Track members expressed concern that the proposal would significantly expand the scope of the Legal Rights Objection and would constitute too significant a shift from the intent of the original policy. Other Work Track members expressed concern that “bad faith” presents a more difficult standard of proof and would represent a substantial change in policy in relation to the Legal Rights Objection process. The Work Track continues to accept feedback on these issues and the suggested revision. Anne E. Aikman-Scalese Of Counsel 520.629.4428 office 520.879.4725 fax AAikman@lrrc.com<mailto:AAikman@lrrc.com> _____________________________ [cid:image005.png@01D4033C.65AF85F0] Lewis Roca Rothgerber Christie LLP One South Church Avenue, Suite 2000 Tucson, Arizona 85701-1611 lrrc.com<http://lrrc.com/> From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces@icann.org] On Behalf Of Steve Chan Sent: Thursday, June 07, 2018 4:55 PM To: gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: [Gnso-newgtld-wg] Initial Report Excerpts - Section 1.8: Dispute Proceedings Dear WG Members, Attached, please find the Initial Report excerpt for section 1.8 on Dispute Proceedings. This section consists of: 1. Objections 2. Accountability Mechanisms & Post-Delegation Dispute Resolution Procedures. This section has been added to the Wiki here: https://community.icann.org/x/NwUhB. We may be able to begin review of this section on the 12 June 2018 meeting, so please begin your review and feel free to provide your input on these sections ahead of their discussion during the WG meeting. Best, Steve Steven Chan Policy Director, GNSO Support ICANN 12025 Waterfront Drive, Suite 300 Los Angeles, CA 90094-2536 steve.chan@icann.org<mailto:steve.chan@icann.org> mobile: +1.310.339.4410 office tel: +1.310.301.5800 office fax: +1.310.823.8649 Find out more about the GNSO by taking our interactive courses<applewebdata://310CAD3E-E244-4690-A938-C2655DD44BDE/learn.icann.org/courses/gnso> and visiting the GNSO Newcomer pages<http://gnso.icann.org/sites/gnso.icann.org/files/gnso/presentations/policy-e...>. Follow @GNSO on Twitter: https://twitter.com/ICANN_GNSO Follow the GNSO on Facebook: https://www.facebook.com/icanngnso/ http://gnso.icann.org/en/ ________________________________ ________________________________ [1]https://community.icann.org/download/attachments/63157176/7.2.5%20Legal%20Ri... ________________________________ This message and any attachments are intended only for the use of the individual or entity to which they are addressed. If the reader of this message or an attachment is not the intended recipient or the employee or agent responsible for delivering the message or attachment to the intended recipient you are hereby notified that any dissemination, distribution or copying of this message or any attachment is strictly prohibited. If you have received this communication in error, please notify us immediately by replying to the sender. The information transmitted in this message and any attachments may be privileged, is intended only for the personal and confidential use of the intended recipients, and is covered by the Electronic Communications Privacy Act, 18 U.S.C. §2510-2521.
participants (3)
-
Aikman-Scalese, Anne -
Jim Prendergast -
Steve Chan